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No Consent for Interloping DANA DESIGN Mark

Posted by James Juo | Dec 07, 2022 | 0 Comments

In 1985, Dana Gleason co-founded Dana Design, Ltd., which became a leader in the outdoor backpack industry. In 1992, Dana Design Ltd. registered the word mark DANA DESIGN for “sporting goods sold exclusively in sporting goods, outdoor and mountaineering shops; namely, backpacks, frames for backpacks, fanny packs and hip sacks.” And, in 1997, Dana Design Ltd. registered a logo for “all-purpose sport bags, backpacks, internal frame backpacks, and rucksacks.”

In 2000, Dana Design Ltd. assigned both marks to K-2 Corporation. The marks were later assigned to Marmot Mountain LLC in 2005. Eventually, the word mark registration was canceled in 2016 and the design mark registration was canceled in 2018. But DANA DESIGN-branded goods apparently still are being offered for sale on the secondary resale market.

Terminal Moraine Inc. apparently started selling backpacks using the DANA DESIGN mark in 2015 or 2016, and later filed a composite DANA DESIGN mark in 2018 as an intent-to-use (“ITU”) trademark application. Terminal Moraine's ITU mark also included a design element nearly identical to the 1997 registered logo.

Mystery Ranch, Ltd., co-owned by Dana Gleason, opposed Terminal Moraine's DANA DESIGN application under Section 2(a). Mystery Ranch, Ltd. v. Terminal Moraine Inc., Opp. No. 91250565, 2022 USPQ2d 1151 (TTAB Nov. 30, 2022). Mystery Ranch sells backpacks, but not under the DANA DESIGN mark.

Entitlement to Statutory Cause of Action

Mystery Ranch asserted that it is “widely known that Mystery Ranch is owned and operated by Dana Gleason,” who also is the company spokesman and backpack designer. The TTAB found that, even if its interests are not coincident with Dana Gleason's interests, Mystery Ranch has a protectible interest in protecting Dana Gleason's persona in order to preserve its right, as a direct competitor of Terminal Moraine, to use the DANA name in promoting backpacks, tents, and related goods.

False Suggestion of a Connection

Statutory false suggestion of a connection under Lanham Act Section 2(a), 15 U.S.C. § 1052(a), emerged from the right to privacy and right of publicity.” In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1643 (TTAB 2015) (PRINCESS KATE falsely suggests a connection with Catherine, Duchess of Cambridge, also known as “Kate Middleton”); see also Bridgestone/Firestone Rsch., Inc. v. Auto. Club de l'Ouest de la Fr., 245 F.3d 1359, 58 USPQ2d 1460, 1464 (Fed. Cir. 2001) (“This protection of rights of personal privacy and publicity distinguishes the § 2(a) false suggestion of connection provision from the § 2(d) likelihood of confusion provision.”); In re Elster, 26 F.4th 1328, 2022 USPQ2d 195, at *8 (Fed. Cir. 2022); Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983) (“There may be no likelihood of such confusion as to the source of goods even under a theory of ‘sponsorship' or ‘endorsement,' and, nevertheless, one's right of privacy, or the related right of publicity, may be violated.”).

Section 2(a) “requires proof . . . that consumers view the mark so closely with the Opposer that they recognize it as the Opposer's name (or nickname), identity or persona.” U.S. Olympic Comm. V. Tempting Brands Neth. B.V., Opp. 91233138, 2021 USPQ2d 164, at *18 (quoting Bos. Athletic Ass'n, 117 USPQ2d at 1497).

Here, the goodwill of the DANA DESIGN trademark previously had been transferred to a third party. But Dana Gleason did not abandon “whatever rights he may have in his ‘persona.' ” And, in the field of backpacks and hiking gear, “the name ‘Dana' is recognized as a nickname for Dana Gleason.”

The TTAB, however, concluded that the opposed DANA DESIGN mark was not a “close approximation” of Mystery Ranch's name or identity.

[A]lthough . . . consumers associate Dana Gleason and Mystery Ranch, we find they are not not perceived as each other's alter ego. There is no merger of the two such that the “Dana” in DANA DESIGN refers interchangeably to either entity.


Even assuming, arguendo, that DANA DESIGN were Opposer's name or identity, the evidence does not demonstrate that Applicant's mark points uniquely and unmistakably to Opposer.

The previously registered DANA DESIGN marks were assigned to third parties Marmot and K-2. And the “multiple potential persons and entities” to which DANA DESIGN might point “is reason enough for us to find that Applicant's mark does not point uniquely and unmistakably to Opposer.” See Pierce-Arrow Soc'y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, *18 (TTAB 2019).

Thus, the TTAB ruled in favor of Terminal Moraine with respect to Section 2(a).

Consent to Register Name Identifying a Particular Living Individual

Section 2(c) of the Trademark Act, 15 USC 1052(c), however, prohibits registration of a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” See also Krause v. Krause Publs., Inc., 76 USPQ2d 1904, 1909 (TTAB 2005).

“To sufficiently allege a Section 2(c) claim, a plaintiff must allege that the mark ‘consists of or comprises' the name, image, likeness or signature of a particular living individual, and that he or she is so well known that the public would reasonably assume a connection between the mark and the individual, or that, because the individual is publicly connected with the business or field of the identified goods or services, such connection would be assumed.” Nike, Inc. v. Palm Beach Crossfit, 116 USPQ2d at 1032-33 (citing Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979).

Although Dana Gleason previously had consented to allow others to use his name in the prior DANA DESIGN mark, it did not extinguish all of his persona rights.

Here, Dana Gleason is known by the relevant consuming public to be associated with backpacks and hiking gear, and he remains publicly connected with Mystery Ranch as its company spokesman and backpack designer.

Thus, use of the name DANA in connection with equipment in the field would lead to the assumption that Dana Gleason was in some way associated with the goods being offered under the name.

Because Gleason's consent to Applicant's registration of its mark has not been provided, the TTAB sustained the opposition under Section 2(c), but not Section 2(a).

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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